Ex Parte Focht et al

Board of Patent Appeals and Interferences

Aug 31, 2010

10665670 (B.P.A.I. Aug. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/665,670 09/18/2003 Heather Lynn Focht 9042M 8580
27752 7590 09/01/2010
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
CHANNAVAJJALA, LAKSHMI SARADA
ART UNIT PAPER NUMBER
1611
MAIL DATE DELIVERY MODE
09/01/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HEATHER LYNN FOCHT, CHRISTOPHER DEAN PUTMAN,
CHEYNE POHLMAN THOMAS, and KARL SHIQING WEI
__________

Appeal 2010-003058
Application 10/665,670
Technology Center 1600
__________

Before EDWARD C. KIMLIN, PETER F. KRATZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims to a personal
cleansing article composed of a package that contains a striped personal
cleansing composition. The Examiner rejected the claims as obvious.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/665,670

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We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses “striped liquid personal cleansing
compositions comprising a cleansing phase and a separate benefit phase
wherein the two phases are packaged in physical contact while remaining
stable for long periods of time” (Spec. 1). Because the composition’s
“benefit phase” contains skin conditioners, the overall composition
“provides both cleansing and improved skin conditioning benefits” (id. at 2).
Claims 1, 2, 4, 5, 7-14, and 19-29 stand rejected and are on appeal
(App. Br. 1-2). Claim 1 is representative and reads as follows:
1. A personal cleansing article comprising a package
containing a striped personal cleansing composition
comprising:

(a) a first stripe comprising a cleansing phase comprising
a surfactant and water; and

(b) at least one additional stripe comprising a
substantially anhydrous benefit phase comprising at least
about 20%, by weight of said benefit phase, of a
hydrophobic material having a solubility parameter of
from about 5 to about 15 (cal/cm3)0.5; wherein the benefit
phase has a Consistency value of from about 1 to about
10,000 poise;

wherein said striped personal cleansing composition is in
a form selected from the group consisting of liquid, semi-
liquid, cream, lotion, gel, and mixtures thereof; and
wherein said cleansing phase and said benefit phase are
in physical contact within said package.

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The Examiner cites the following documents as evidence of
unpatentability:
Chambers US 5,612,307 Mar. 18, 1997
Hayward US 6,534,456 B2 Mar. 18, 2003
Frantz US 2003/0180246 A1 Sep. 25, 2003

The following rejections are before us for review:
(1) Claims 1, 2, 4, 5, 7-9, 14, and 19-29, rejected under 35 U.S.C. §
103(a) as obvious over Chambers and Hayward (Ans. 3-6);
(2) Claims 10-13, rejected as obvious over Chambers, Hayward, and
Frantz (Ans. 6-7).
OBVIOUSNESS -- CHAMBERS AND HAYWARD
ISSUE
The Examiner cites Chambers as teaching a two-phase composition in
which the ingredients in the two phases meet the physical parameters recited
in the rejected claims (Ans. 3-4). The Examiner concedes, however, that
Chambers does not meet the claimed feature requiring the cleansing and the
benefit agents to be in physical contact when packaged, but “instead teaches
separating the two components thus avoiding direct contact with another so
as to prevent any adverse actions that may occur between the two
components and resulting in ineffective deposition of the benefit agent” (id.
at 4).
The Examiner cites Hayward to meet that deficiency (id.). The
Examiner notes that Hayward specifically describes its disclosure as an
improvement over the Chambers patent (id.). In particular, the Examiner
finds, Hayward discloses two-phase systems encompassing the two phases
recited in Appellants’ claims, the phases having specific viscosity properties
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allowing them to be stably packaged together “without any partitions i.e., . . .
in physical contact” (id. at 5).
Based on these teachings, the Examiner concludes:
[I]t would have been obvious for one of an ordinary skill
in the art at the time of the instant invention to optimize the
rheological properties of two phases of the composition of
Chambers so as to be able suspend both the phases together
without any partition between the phases and thus extrude them
together as stripes and still be able to maintain the viscosity
because Hayward teaches several ways to alter the viscosity of
the lamellar and isotropic phases so as to obtain a desired final
product.

(Id. at 6.)
Appellants argue that the Examiner failed to make a prima facie case
of obviousness because modifying Chambers in the manner posited by the
Examiner would modify Chambers’ principle of operation (App. Br. 6). In
particular, Appellants urge, Chambers uses its partitioned container to allow
for precise ratios of the two phases to be dispensed (id. at 7).
Thus, Appellants reason, modifying Chambers by packaging the two
phases together in a partitionless container “would not allow the
compositions of Chambers to be dispensed separately in a predetermined
and precise ratio which achieves the desired effect of the invention” (id. at 8
(citing Chambers, col. 2, ll. 4-11)).
Moreover, Appellants argue, because Chambers discloses that the
partitioned container is required to avoid adverse interactions between the
two phases, allowing contact between the two phases “as in the
parti[t]ionless container of Hayward . . . would render the compositions
unsatisfactory for their intended purpose” (id.).
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Appellants do not present separate arguments with respect to any of
the claims subject to this ground of rejection. We select claim 1 as
representative of the rejected claims. See 37 C.F.R. § 41.37(c)(1)(vii).
In view of the positions advanced by Appellants and the Examiner,
the issue with respect to this rejection is whether the evidence of record
supports the Examiner’s position that an ordinary artisan would have been
prompted to package a striped personal cleansing composition, in which at
least one stripe is a surfactant-containing cleansing phase, and at least one
other stripe is a hydrophobic material-containing benefit phase, wherein
“said cleansing phase and said benefit phase are in physical contact within
said package,” as recited in claim 1.
FINDINGS OF FACT (“FF”)
Chambers
1. Chambers discloses:
An aqueous liquid cleansing and moisturising composition
comprising a surface active agent and a benefit agent in which
the surface active agent and benefit agent are separate but
combinedly dispensable from a single packaging means in a
predetermined ratio as discrete domains. Separating the benefit
agent from the surface active agent results in improved
deposition of the benefit agent.

(Chambers, abstract.)
2. Chambers discloses:
The surface active agent and benefit agent are
dispensable from a single packaging means in a predetermined
ratio according to the use for which composition is intended.
An advantage of dispensing the surface active agent and benefit
agent in combination is that it avoids the inconvenience of
having to post mix the two components. This is particularly
advantageous when the separate components of a composition
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need to be mixed in precise ratios in order to achieve the
desired effect.

(Id. at col. 2, ll. 4-11.)
3. Chambers discloses that the “discrete domains of the composition of
the invention may be considered as separate stripes of surface active agents
and of benefit agent” (id. at col. 2, ll. 12-14.)
4. Chambers further discloses:
It is an essential feature of the invention than the benefit
agent and surface active agent are separate but combinedly
dispensable from a packaging means and typically a single
packaging means. Such a packaging means includes those
systems which comprise two separate compartments. Ensuring
that the surface active agent and benefit agent are separate can
be achieved in a variety of ways. Packaging of the composition
such that the surface active agent and benefit agent are
presented in separate compartments or in separate domains
within the packaging; including encapsulation of the benefit
agent; and by processing of the composition by coextrusion to
produce a striped product in which individual stripes contain
either the surface active agent or benefit agent.

(Id. at col. 6, ll. 1-14.)
5. Chambers discloses that a further advantage of its composition “is that
it provides a means whereby benefit agents which are sensitive to surface
active agents, i.e. there is a detrimental interaction between the surface
active agent and benefit agent, can be used because they are protected from
the surface active agent” (id. at col. 6, ll. 16-20).
Hayward
6. Hayward discloses:
The invention relates to a plurality of liquid cleansing
compositions having at least one lamellar phase which
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possesses a lotion-like appearance conveying signals of
enhanced moisturization and at least one abutting isotropic
phase having enhanced cleansing ability. The inventive
composition is contained in a partitionless container in one
embodiment conveying signals of a plurality of compositions.
This multiphase composition is stable upon storage and is
dispensed as a striped product where typically one stripe has
primarily a cleansing function and a second stripe has primarily
a moisturization function.

(Hayward, abstract.)
7. As background, Hayward summarizes Chambers’ disclosure,
discussed above, of producing a striped composition by keeping the benefit
agent and cleansing agent separate in a partitioned package (id. at col. 1, ll.
35-51).
8. Hayward discloses, however, that when the skin-conditioning
hydrophobic emollients of its composition are included in a “lamellar phase”
formed by combining the emollients with surfactants that produce micelles
having a layered configuration (id. at col. 2, l. 18, through col. 3, l. 46), the
emollients can be provided separately, but alongside, a lather-producing,
surfactant-containing “isotropic phase” (id. at col. 3, l. 57, through col. 4, l.
2).
9. Thus, Hayward discloses, one “advantage of the inventive product is
the fact that separate lamellar and isotropic compositions having specific
functions, e.g. cleansing and moisturizing the skin may be simultaneously
dispensed in a partitionless container” (id. at col. 4, ll. 33-37).
10. Hayward further discloses that, “[u]nexpectedly, the lamellar and
isotropic phases in the inventive product remain separated (i.e. do not mix)
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at room temperature for at least 70 days and at elevated temperature (50° C.)
for at least one week” (id. at col. 4, ll. 40-43).
11. Hayward also discloses that, in preferred embodiments, “the lamellar
and isotropic phases are rheologically compatible, i.e. they have the same
flow properties under the conditions of filling, storage, and product usage”
(id. at col. 4, ll. 18-20.
PRINCIPLES OF LAW
In KSR Int’ l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court reaffirmed that “when a patent ‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273
(1976)).
Also, “[n]on-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole.” In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
ANALYSIS
Appellants’ arguments do not persuade us that the Examiner failed to
make a prima facie case of obviousness.
We acknowledge Chambers’ teaching that it is essential to keep the
cleansing and benefit phases of a striped composition packaged separately in
a partitioned container so as to avoid undesirable interactions between the
two phases (FF 1, 4, 5). We also acknowledge Chambers’ teaching that it is
advantageous to keep the cleansing and benefit phases of a striped
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composition separate in a partitioned container when the two phases need to
be mixed in precise ratios for use (FF 2).
The Examiner has not, however, applied Chambers by itself to show
obviousness. Rather, as the Examiner points out, in a method suggested as
an alternative to Chambers’ partitioned package (FF 7), Haywood discloses
that if a striped two-phase composition is prepared in the form of a
lamellar/isotropic combination (FF 8), the skin-conditioning phase and
cleansing phase can be simultaneously dispensed from a partitionless
container, and the phases remain separated and stable for extended periods
despite being in physical contact with each other (FF 9, 10). Thus, we are
not persuaded that an ordinary artisan following the references’ combined
teachings would have been dissuaded from packaging striped compositions
in partitionless containers.
Moreover, given Haywood’s disclosure that the two phases of its
striped lamellar/isotropic striped compositions have the same flow properties
(FF 11), we are also not persuaded that following Haywood’s teachings
would have failed to provide a composition in which the two phases would
be dispensed in the precise ratios required for optimal effect.
In sum, Appellants’ arguments do not persuade us that the evidence of
record fails to supports the Examiner’s position that an ordinary artisan
would have been prompted to package a striped personal cleansing
composition having the cleansing and benefit phases recited in claim 1,
wherein “said cleansing phase and said benefit phase are in physical contact
within said package,” as also recited in claim 1. We therefore affirm the
Examiner’s obviousness rejection of claim 1 over Chambers and Haywood,
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as well as the rejection of claims 2, 4, 5, 7-9, 14, and 19-29, which were not
argued separately. See 37 C.F.R. § 41.37(c)(1)(vii).
OBVIOUSNESS -- CHAMBERS, HAYWARD, AND FRANTZ
The Examiner also rejected claims 10-13 as obvious over Chambers,
Hayward, and Frantz (Ans. 6-7). Claim 10 is representative of the rejected
claims. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 10 depends from claim 1 and, among other things, requires the
cleansing phase to comprise at least one alkanolamide (App. Br. 14). The
Examiner relied on Chambers and Hayward for the teachings discussed
above, and cited Frantz as teaching that alkanolamides were known to be
useful in surfactant compositions included in shampoos, cleansers, and body
washes, “including striped compositions” (Ans. 7 (citing Frantz [0122])).
The Examiner concluded that it would have been obvious to include
an alkanolamide in the cleaning phase of Chambers’ compositions because
Frantz teaches that a composition containing an alkanolamide, an anionic
surfactant, water, and an electrolyte, as recited in claim 10, imparts “a free-
flowing and non-Newtonian shear thinning property that provides the ability
to suspend components or ‘benefit agents’ such as oils, skin care agents etc. .
. . A skilled artisan would have expected to achieve a free-flowing cleansing
phase [as also recited in claim 10] with a non-Newtonian shear thinning” (id.
[0073]-[0076])).
Appellants argue that Chambers requires the cleansing and
hydrophobic benefit phases to be kept separate, whereas the surface active
agents and benefit agents in Frantz are in the same composition (App. Br. 9).
In fact, Appellants argue, Frantz’s surface active agents “function as
delivery systems for the benefit agents (id. (citing Frantz [0120]-[0122])).
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Thus, Appellants conclude, “[m]odifying Chambers by not physically
separating the surface active agents and the benefit agents in a partitioned
package in view of Frantz would change the principle of operation of
Chambers” (App. Br. 9). Moreover, Appellants urge, this modification
“would not allow the compositions of Chambers to be dispensed separately
in a predetermined and precise ratio which achieves the desired effect of the
invention” (id.).
Appellants’ arguments do not persuade us that the Examiner failed to
make a prima facie case of obviousness.
We acknowledge Frantz’s disclosure that “examples of components
that may be suspended by the compositions of the present invention are a
number of benefit agents. A ‘benefit agent’ means any active ingredient that
is to be delivered into the skin or hair, or onto the skin or hair, or both, at a
desired location” (Frantz [0074]). We also acknowledge that some of
Frantz’s benefit agents are hydrophobic fats and oils encompassed by the
benefit phase recited in Appellants’ claim 1, rather than the cleansing phase
(id. at [0075]).
However, given Frantz’s disclosure that its alkanolamide-containing
compositions are, in general, useful as surfactants (see, e.g., abstract), and
given the disclosure that Frantz’s surfactants are useful in suspending a
number of non-hydrophobic substances used in personal cleansing
compositions (id. at [0073] and [0076]), we are not persuaded that an
ordinary artisan would have been dissuaded from including an alkanolamide
in the cleansing phase of a striped two-phase personal cleansing composition
such as that disclosed by Chambers or Hayward. In this regard, Appellants
point to no disclosure in Frantz suggesting that its composition would have
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failed to act as a surfactant when present in the cleansing phase of
Chambers’ or Hayward’s personal care products.
Appellants also argue that an ordinary artisan would not have been
motivated to modify Chambers in view of Frantz, given Chambers’
disclosure that separate packaging of the cleansing and benefit phases is
required for proper deposition of the combined products (App. Br. 9-10). As
discussed above, however, we do not find this argument persuasive, given
Hayward’s disclosure that the cleansing and benefit phases can be packaged
in contact with each other under the appropriate circumstances.
In sum, Appellants’ arguments do not persuade us that the Examiner
failed to make a prima facie case of obvious with respect to claim 10.
Accordingly, we affirm the Examiner’s obviousness rejection of that claim
over Chambers, Hayward, and Frantz, as well as the rejection of claims 11-
13, which were not argued separately. See 37 C.F.R. § 41.37(c)(1)(vii).
SUMMARY
We affirm the Examiner’s rejection of claims 1, 2, 4, 5, 7-9, 14, and
19-29 as obvious over Chambers and Hayward.
We also affirm the Examiner’s obviousness rejection of claims 10-13,
over Chambers, Hayward, and Frantz.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
Appeal 2010-003058
Application 10/665,670

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THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI OH 45202